`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 10
`Entered: January 31, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ANALYTICS FOR LIFE, INC.,
`
`Petitioner,
`
`v.
`
`8825319 CANADA LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-01742
`Patent 9,131,864 B2
`____________
`
`Before JOSIAH C. COCKS, SCOTT A. DANIELS, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`IPR2017-01742
`Patent 9,131,864 B2
`
`A. GENERAL INSTRUCTIONS
`1. Requests for an Initial Conference Call
`Unless at least one of the parties requests otherwise, we will not
`conduct an initial conference call as described in the Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012). Any
`request for an initial conference call should be made promptly and include,
`(a) a list of proposed motions, if any, to be discussed during the call, and
`(b) a list of dates and times when the parties are available for the call. The
`parties shall be prepared also to discuss any concerns relating to the schedule
`in this proceeding as set forth below.
`2. Protective Order
`A protective order does not exist in this proceeding unless the parties
`file one and the Board approves it. If either party files a motion to seal
`before entry of a protective order, a jointly proposed protective order should
`be presented as an exhibit to the motion. We encourage the parties to adopt
`the Board’s default protective order if they conclude that a protective order
`is necessary. See Default Protective Order, Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012). If the parties choose
`to propose a protective order deviating from the default protective order,
`they must submit the proposed protective order jointly along with a marked-
`up comparison of the proposed and default protective orders showing the
`differences.
`The Board has a strong interest in the public availability of the
`proceedings. We advise the parties that redactions to documents filed in this
`proceeding should be limited strictly to isolated passages consisting entirely
`of confidential information, and that the thrust of the underlying argument or
`
`
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`IPR2017-01742
`Patent 9,131,864 B2
`
`evidence must be clearly discernible from the redacted versions. We also
`advise the parties that information subject to a protective order will become
`public if identified in a final written decision in this proceeding, and that a
`motion to expunge the information will not necessarily prevail over the
`public interest in maintaining a complete and understandable file history.
`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
`3. Compliance with Word Count/Page Limit and Type Face
`The parties shall comply with 37 C.F.R. § 42.24 and be familiar with
`Board interpretations of the requirements of that regulation. For example,
`“[e]xcessive wording in figures, drawings or images, deleting spacing
`between words, or using excessive acronyms or abbreviations for word
`phrases, in order to bypass the rules on word count, are not reasonable.”
`IPR2016-01535, Paper 8, 7 (Dec. 1, 2016). The excessive deletion of spaces
`in citations may be deemed inappropriate – the parties are to make
`reasonable efforts to comply with accepted citation formats. See, e.g.,
`IPR2017–00433, Paper 15 (June 22, 2017), see also The Blue Book,
`Twentieth Ed., Rules 3.3, 5.1; Pi-Net Int’l, Inc. v. JPMorgan Chase & Co.,
`600 F. App’x 774, 775 (Fed. Cir. 2015) (determining deletion of required
`spacing circumvents rule on word count).
`4. Motions to Amend
`Patent Owner may file a motion to amend without prior authorization
`from the Board. Nevertheless, Patent Owner must confer with the Board
`before filing such a motion. See 37 C.F.R. § 42.121(a). Patent Owner should
`arrange for a conference call with the panel and opposing counsel at least one
`week before DUE DATE 1 in order to satisfy the conferral requirement. We
`direct the parties to the Board’s website for representative decisions relating to
`
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`IPR2017-01742
`Patent 9,131,864 B2
`
`Motions to Amend among other topics. The parties may access these
`representative decisions at:
`http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp.
`5. Discovery Disputes
`The panel encourages parties to resolve disputes relating to discovery
`on their own and in accordance with the precepts set forth in 37 C.F.R.
`§ 42.1(b). To the extent that a dispute arises between the parties relating to
`discovery, the parties shall meet and confer to resolve such a dispute before
`contacting the Board. If attempts to resolve the dispute fail, a party may
`request a conference call with the Board and the other party in order to seek
`authorization to move for relief.
`In any request for a conference call with the Board to resolve a
`discovery dispute, the requesting party shall: (a) certify that it has conferred
`with the other party in an effort to resolve the dispute; (b) identify with
`specificity the issues for which agreement has not been reached; (c) identify
`the precise relief to be sought; and (d) propose specific dates and times at
`which both parties are available for the conference call.
`6. Depositions
`The parties are advised that the Testimony Guidelines appended to the
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14,
`2012) (Appendix D), apply to this proceeding. The Board may impose an
`appropriate sanction for failure to adhere to the Testimony Guidelines.
`37 C.F.R. § 42.12. For example, reasonable expenses and attorneys’ fees
`incurred by any party may be levied on a person who impedes, delays, or
`frustrates the fair examination of a witness.
`
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`IPR2017-01742
`Patent 9,131,864 B2
`
`
`Whenever a party submits a deposition transcript as an exhibit in this
`proceeding, the submitting party shall file the full transcript of the deposition
`rather than excerpts of only those portions being cited. After a deposition
`transcript has been submitted as an exhibit, all parties who subsequently cite
`to portions of the transcript shall cite to the first-filed exhibit rather than
`submitting another copy of the same transcript.
`7. Cross-Examination
`Except as the parties might otherwise agree, for each due date—
`1.
`Cross-examination begins after any supplemental evidence is
`due. 37 C.F.R. § 42.53(d)(2).
`2.
`Cross-examination ends no later than a week before the filing
`date for any paper in which the cross-examination testimony is expected to
`be used. Id.
`8. Motion for Observation on Cross-Examination
`A motion for observation on cross-examination provides the parties
`with a mechanism to draw the Board’s attention to relevant cross-
`examination testimony of a reply witness because no further substantive
`paper is permitted after the reply. See Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The observation must be a
`concise statement of the relevance of precisely identified testimony to a
`precisely identified argument or portion of an exhibit. Each observation
`should not exceed a single, short paragraph. The opposing party may
`respond to the observation. Any response must be equally concise and
`specific.
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`IPR2017-01742
`Patent 9,131,864 B2
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`B. DUE DATES
`This order sets due dates for the parties to take action after institution
`of the proceeding. The parties may stipulate to different dates for DUE
`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6). A
`notice of the stipulation, specifically identifying the changed due dates, must
`be promptly filed. The parties may not stipulate to an extension of DUE
`DATES 6 and 7.
`In stipulating to different times, the parties should consider the effect
`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
`evidence and cross-examination testimony.
`1. DUE DATE 1
`The patent owner may file—
`a.
`A response to the petition (37 C.F.R. § 42.120), and
`b.
`A motion to amend the patent (37 C.F.R. § 42.121).
`The patent owner must file any such response or motion to amend by DUE
`DATE 1. If the patent owner elects not to file anything, the patent owner
`must arrange a conference call with the parties and the Board. The patent
`owner is cautioned that any arguments for patentability not raised in the
`response will be deemed waived.
`2. DUE DATE 2
`The petitioner must file any reply to the patent owner’s response and
`opposition to the motion to amend by DUE DATE 2.
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`IPR2017-01742
`Patent 9,131,864 B2
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`3. DUE DATE 3
`The patent owner must file any reply to the petitioner’s opposition to
`patent owner’s motion to amend by DUE DATE 3.
`4. DUE DATE 4
`a.
`Each party must file any motion for an observation on the
`cross-examination testimony of a reply witness (see section A.8, above) by
`DUE DATE 4.
`b.
`Each party must file any motion to exclude evidence (37 C.F.R
`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by
`DUE DATE 4.
`5. DUE DATE 5
`a.
`Each party must file any reply to a petitioner observation on
`cross-examination testimony by DUE DATE 5.
`b.
`Each party must file any opposition to a motion to exclude
`evidence by DUE DATE 5.
`6. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`
`
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`
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`IPR2017-01742
`Patent 9,131,864 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ........................................................................... April 25, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................. July 18, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ........................................................................ August 15, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ..................................................................... September 5, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ................................................................... September 19, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ................................................................... September 26, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ....................................................................... October 24, 2018
`Oral argument (if requested)
`
`8
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`
`
`IPR2017-01742
`Patent 9,131,864 B2
`
`For PETITIONER:
`
`David S. Moreland
`Lawrence Aaronson
`T. Paul Tanpitukpongse
`Meunier Carlin & Curfman LLC
`dmoreland@mcciplaw.com
`laaronson@mcciplaw.com
`ptanpitukpongse@mcciplaw.com
`
`For PATENT OWNER:
`
`Mirek A. Waraksa
`waraksa@sympatico.ca
`
`
`9
`
`
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